Posts by Rachael Dickson

What is delta-8 THC?

Delta-8 THC is a cannabinoid found in cannabis. The natural quantities of delta-8 found in cannabis are pretty low, so to create usable amounts of it, it typically has be synthesized from hemp.

Is it Legal? Well...maybe.

*Marijuana* is a schedule I substance outlawed under the Controlled Substance Act, but the lower-thc cannabis plant – Hemp – was removed from Schedule I back in December 2018. Although Schedule I continues to list “tetrahydrocannabinols,” there is an exception listed for “tetrahydrocannabinols in hemp.” So delta-8 THC isn’t unlawful under the CSA.

Delta-8 THC also isn’t included in any FDA-approved pharmaceutical, so it doesn’t fall under the FDCA (Federal Food, Drugs, and Cosmetics Act) in the way that hemp-derived CBD does.

These were the arguments that attorney Dustin Kovacic made last year to overcome the USPTO’s initial CSA and FDCA Unlawful Use Refusals and convince them to register his client’s mark PLIFT. Although the goods identification does not specifically reference hemp-derived delta-8 (or hemp-derived delta-9 THC, also present in the actual goods), the specimen and record explicitly made it clear that the goods contained these items. Although applications for unlawful goods have absolutely been registered at the USPTO in the past by sneaking past the examiner their exact nature, that was absolutely not the case here. This mark registered in June 2024.

Attorney Andrea Steel found this registration and shared it on LinkedIn the other day, starting a whole conversation about whether this indicates a larger policy shift in the USPTO’s treatment of hemp-derived THC cannabinoid products. Although the USPTO hasn’t made any explicit policy statements on cannabis goods/services since a rather vague May 2019 Examination Guide on the subject, I know from my experience as a trademark examiner on the controlled substances work team at the USPTO from 2019-2021 that their internal policies absolutely have changed several times.

https://www.uspto.gov/sites/default/files/documents/Exam%20Guide%201-19.pdf

For example, while the USPTO formerly accepted identifications of goods referring to “hemp,” identifications referring to hemp now generally have to include the chemical definition for clarifying purposes.

However, does this application really indicate a broader policy shift? There’s evidence indicating that that’s not the case.

There have been several applications to register trademarks with delta-8 THC goods identifications that have been pending at the USPTO unexamined for years. This sort of unofficial, unannounced suspension is something I’ve unfortunately noticed on several occasions when it comes to applications the USPTO doesn’t really want to deal with.

It does not appear that any applications which explicitly state delta-8 THC in the goods identification have been registered at the USPTO still, and the USPTO continues to ignore several of these applications entirely.

Affected applications include:

• LEAFY8NATURAL HEALING (with design) for a variety of hemp flowers and accessories, including “Hemp flower containing delta-8 tetrahydrocannabinol (delta-8THC) for use as a smoking herb.” Although this application was filed on Aug.05, 2021, it has yet to be examined by the USPTO over 3 years and 5 months later.
• VEGANCBD for a variety of cosmetic and beauty products, including “Cosmetic body care preparations, namely, skin care oil, massage oil, lotion, skin cream in liquid or solid form, hand cream, body cream, bath bombs, and/or lip balms; all of the foregoing with or without Nano (nanotechnology) and/or CBG (cannabigerol) and/orCBD (cannabidiol) containing goods derived from cannabis and/or hemp with aDelta 8 THC and/or Delta-9 THC concentration of not more than 0.3% on a dry weight basis.” It was filed Nov. 27, 2022 and has yet to be examined over 2 years and 1 month later.
• TWOROMANTIC for a variety of cigar and cigar accessories, including “Smokers' mouthpieces for cigars and cigarettes for use with or without cannibidiol (CBD) and other related Cannabinoids which include but is not limited to such as CBG, THCa,THC, THCv, Delta 8 THC, THVo, etc. all less than .3% Delta 9 THC/Delta 8 THC by dry weight basis.” Although this application was filed on May 30, 2023, it has yet to be examined by the USPTO over 1 year and 7 months later.
• SLAPZ for a variety of supplements and pharmaceutical preparations including  “Dietary and nutritional supplements containing delta-8 THC derived from hemp.” Although it was filed inMay 30, 2023, it still has yet to be examined by the USPTO over 1 year and 7 months later.
  

Those applications with Delta-8 THC identifications in them that have been examined, CSA or FDCA refusals continue to be issued.

• HI ON NATURE received CSA and FDCA Unlawful UseRefusals on Dec. 17, 2024, ~6 months after PLIFT registered in two applications– for a variety of goods/services including “Non-medicated lotions for skin and body which may contain delta-8 THC derived from hemp.”

What does this mean for the future of applications to register delta-8 THC and other hemp-derived cannabinoids at the USPTO?

It’s unclear. The USPTO’s policy on this continues to be arbitrary and inconsistent, but the approval of PLIFT indicates at least some hope that their approach to these apps may change soon.

Application Filing Fees as of January 18, 2025 (WIPO application fees will change as of February 18, 2025):

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Possible additional charges for applications to register trademarks:

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Statement of Use fees for applications based on an intent to use a mark in commerce:

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Fees to Maintain Your Registration:

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Petitions and Letters of Protest Fees:

The last thing any trademark holder wants to receive is a cease-and-desist letter from an attorney representing a brand that claims your mark is too similar to theirs. However, trademark holders can at least feel some relief that a number of these intimidating cease and desist letters are, in fact, fabricated shakedowns and not legitimate claims of trademark infringement.

All bark, no bite

Much like the USPTO impersonation emails discussed in Scam Series No.1, scammers have become quite adept at mimicking the formatting, letterheads, and even the writing style of law firms in these fake cease-and-desist letters. However, trademark holders can remain vigilant by evaluating the situation as follows:

1. Review the letter itself for obvious flaws.These could be spelling mistakes (more common than one might imagine),incomplete information about the supposed prior rights holder and their mark, or significant emphasis on urgency such as a 24-hour deadline.

2. Even if the letter seems to come from an attorney and legitimate firm, research both the attorney and the firm. Review any firm websites listed (e.g., the domain in the email address) for similar issues like typos, odd or missing information, AI-generated images, etc.Research the attorney who supposedly wrote the letter—look at their profile on the firm site and compare it to social media profiles like LinkedIn, reverse image search any headshots shown on the firm site, check the state bar to see if they’re actually listed in the state the letter claims they’re from, and see if any other information available online drastically differs from the information on the supposed firm’s site.

3. Like any other product or service, check reviews for botted or fraudulent ratings. Are the reviews totally 1-sided (all 5stars)? Were all the reviews submitted around the same time? Are the re-recurring phrases in a number of the reviews? Ask yourself questions about what makes a reviewer legitimate and how some reviews may fall short.

Again in the same vein as the USPTO impersonation scams, a trademark holder should bring any letter claiming infringement to their own attorney for evaluation. If all the signs point to the letter being a scam, either the victim or their attorney can report the incident to the state bar where the letter supposedly originates from, report the issue via an online form for internet crimes at www.ic3.gov, or contact the victim’s state attorney general.

Evolution of the Scam and USPTO's Response

This particular scam is the latest evolution in a series dating back to 2017, when a flood of trademark applications were filed at the USPTO with fraudulent specimens. Specimens, proof of the applicant’s use of a product or service in commerce, must be submitted before an application can proceed to registration. Bad actors would take an existing photograph of a product from online and digitally replace the existing trademark with the applied-for mark and submit that as a specimen. The USPTO feared that this practice could result in marks being registered that were not actually being used in commerce in the US, which could threaten the integrity of the US Trademark Register.

This led to a persistent game of Whac-a-Mole® between scammers and the USPTO, as the government implemented several security measures to try to defend against the fraudulent specimen issue, and then against other issues as they occurred. Nevertheless, new types of scams keep cropping up.

1. In August of 2019, the USPTO implemented the U.S. Counsel Rule, requiring any non-U.S. applicant to file via a U.S. attorney. The USPTO reasoned that since the fraudulent specimens were primarily coming from foreign applicants, this new requirement could potentially curb the issue.
2. Toward the end of 2019, the USPTO required a uspto.gov account to access trademark application forms. This provided more accountability as to who was actually filing the applications. While the fraudulent specimen issue reduced over time, the USPTO still found themselves dealing with hundreds or thousands of applications filed by trademark mills, companies full of non-attorneys who defrauded applicants into thinking they were being represented by competent counsel. These applications were often full of significant issues.
3. Eventually, attorneys had to start including their bar license numbers, state of registration, and year of licensure with trademark applications. This led to many bad actors reaching out to US attorneys via LinkedIn to ask if they could essentially “rent” their credentials in order to file massive numbers of applications.
4. In August of 2022, the USPTO began to require all uspto.gov users to verify their identity via id.me in order to file trademark forms. Support staff, such as legal assistants, paralegals, and law clerks, had to be sponsored by a verified attorney to access the filing system.In January of 2024, the id.me verification requirement was rolled out to cover support staff as well.

While these identity-verification methods may initially appear robust, the process of drafting an application itself leaves room for exploitation. When a filer reaches the “Attorney/Correspondence” section of an application, nothing actually prevents them from typing any name and bar number for the attorney. While examiners do check for attorney credentials during the application review process, this system is by no means infallible. The USPTO recently told ABA Journal that there have now been 30 documented cases of attorney names and credentials being listed on applications they did not file. One attorney, who has never practiced trademark law, had her name listed on over 2,300 applications!

These scammers impersonate U.S. attorneys in order to extract fees from unsuspecting clients and fraudulently file their trademark applications, but then disappear and allow the application to fall by the wayside. These scammers generally do not perform any sort of due diligence when filing the marks and the applications they file are often refused for some sort of deficiency or obvious conflicting mark. Applicants who expect to have an attorney who can handle such a refusal are then ghosted; these applications generally abandon due to failure to file a response. 

The victims here are two-fold: the clients who waste time and money investing in a doomed trademark application filed with fraudulent credentials, and the attorneys whose names are attached to these slapdash applications. 

Applicants seeking to avoid this situation should verify that their attorney is who they say they are. Make sure to check your attorney’s contact information online to ensure they are who they say they are. Be suspicious of unbelievably low filing fees for trademark applications; if it seems too good to be true, it often is. 

Attorneys should perform regular trademark searches for applications listing you as attorney by searching AT:(("FIRST NAME LAST NAME"~2) OR ("LAST NAME, FIRST NAME"~2)). If you see marks you don’t recognize, report the issue to [email protected].

As is the case with scammers in many aspects of our lives, trademark scammers often attempt to solicit payments from trademark holders and attorneys alike by providing official-presenting information, frequently with some form of fabricated urgency. They hope that the recipient will accept the charge at face value and pay up to avoid these supposed risks to theirs or their clients’ trademarks. These impersonators often reach out to applicants via phone, email, and mail.

Phone Calls:

The genuine USPTO will never call you directly to request a fee of any kind. Even if your phone identifies the call as originating from the USPTO, if they’re asking for a fee, it’s not the trademark office.

This trick is called phone number spoofing, and it makes modern scammers particularly dangerous. The USPTO has put out some valuable guidance on this issue, noting that they will never call from a classic toll-free number like 800 or even the main “contact” number, as this number is only used to take calls as opposed to making them.

So be skeptical if you do receive a call from someone who claims they’re with the USPTO. Remember: if an attorney filed your application and is listed as your representative on your application, the USPTO is actually not even allowed to contact you! If someone “from the USPTO” contacts you as a represented applicant, make sure to tell your attorney right away. 

If you did file your application without an attorney and you get a call from the USPTO, it’s a good idea to get the caller’s name and law office number and ask if you can call them back. Once you get off the phone, you can verify via the USPTO’s employee locator (https://portal.uspto.gov/EmployeeSearch/) whether that information is correct. If so, you can use the phone number listed for that employee on the website to contact them. Alternatively, you can call the Trademark Assistance Center at 1-800-786-9199 to confirm the employee’s identity. The examining attorneys at the USPTO are very aware of the trademark scams occurring right now, and will understand if you want to verify their identity before speaking with them.

One way to try to prevent future scam calls is to avoid putting any phone number on your trademark application, as this is not actually required. While scammers maystill try to reach out to you via phone even if your number is not listed on your application, leaving it off reduces the likelihood of it occurring.

E-mails:

Scammers may also pose as the USPTO via email. Many of these communications claim that a trademark holder hasn’t paid some part of their application or maintenance fee, or that a conflicting trademark has been found through a search and the trademark holder must pay a fee to resolve the issue. These emails can be dismaying to receive as a trademark holder, and sometimes even attorneys may brush past red flags when scammers roll out an official letterhead and 24-hour deadline.

If this happens, keep in mind: any emails from the USPTO will end in “@uspto.gov.” You will primarily only receive USPTO emails from 3 main email addresses, which are used to notify mark holders and attorneys of changes or updates to an application or registration: [email protected] for office actions requiring a response, and [email protected] and [email protected] for procedural status updates like Notices of Allowance, Notices of Publication, Registration, and Maintenance reminders.

If you are not represented by an attorney, you may also receive an email from a specific examining attorney asking for your authorization to make specific amendments to a specific application. Such emails will be from addresses containing an examiner’s first and last name and ending in uspto.gov. Any other emails purporting to be from the USPTO, and particularly any official-looking emails requesting fee payments, are likely scams.

Letters:

Finally, last but not least, scammers often target trademark applicants and registrants via physical letters. These often are sent by entities with official sounding names which sound similar to the USPTO and will request additional payments to “publish” your application or “renew” your registered trademark.

If this happens, check over the letter carefully. Actual official correspondence relating to your trademark application will only come from the USPTO or the United States Patent and Trademark Office, which is based in Alexandria, Virginia. Variations on that name, such as Trademark Renewal Service or Patent and Trademark Bureau, are not legitimate. Scammer letters will also often include small misspellings of an office name, or will include fine print disclaimers indicating that they are not actually a federal agency.  

You can also look up names of scammers and examples of misleading solicitations on the USPTO’s website at https://www.uspto.gov/trademarks/protect/examples-fraudulent-misleading-solicitations.

Remember, if you are represented by an attorney, make sure you tell them about any attempts that are made to contact you and talk to you about your trademark application so that they have all the information they need to keep you and your application protected.

Quick Question: Which of these words are currently federally registered trademarks in the US?

Here’s a hint. All of these words WERE federally registered trademarks at one point, but only eight of them still have active trademark registrations (you can find the full answer to this at the bottom of the post).

What’s going on here? Sometimes, when a company’s product becomes extremely popular and dominates its industry, consumers begin to use the product’s trademark as a generic term for the product itself. This can  give a trademark owner an aspirin-worthy headache, as they can lose their legal rights to the trademark itself if generic use of the trademark becomes common enough. Nobody wants their trademark rights to be thrown in a dumpster!

Trademarks are intended to distinguish and identify a *single* source of goods; if that term is being used by consumers to refer to any products of that type, then it’s clear as cellophane that it’s no longer being used as a trademark. This makes the trademark registration vulnerable to a cancellation action at the Trademark Trial and Appeal Board on the basis of its loss of source-identifying ability. If a trademark registration ceases to be a trademark due to widespread generic use, it’s considered the victim of “genericide.” This has happened in the past with trademarks such as Escalator, Trampoline, and Dumpster.

Trademark Owners can reduce the risk of their trademarks taking an escalator ride down in source indicating value in a number of ways: 

First, trademark owners can avoid using their marks in a generic manner. Instead of referring to their products as a noun (“Kleenex”) or a verb (“Go Xerox this document”), they can use their product names as adjectives and include the registered trademark symbol (“Kleenex® tissue” and “Xerox® copier”). Many trademark owners take this further by adding “brand” after their trademark as well. Johnson & Johnson, the owners of the Band-Aid trademark, changed the words of its 1975 jingle “I’m stuck on Band-Aid” to “I’m stuck on Band-Aid® brand” in the 90s.

Second, trademark owners can educate the public as to the appropriate use of their trademarks. Velcro IP Holdings, the owner of the Velcro trademark, did this humorously back in 2017 when they released a “We are the World” style video called “Don’t Say Velcro,” which told customers “if you call it ‘Velcro,’ we're gonna lose that circled ‘R.’” Kleenex also played with this concept in an Instagram post stating “The lawyers of Kleenex thank you for saying Kleenex® Brand Tissue.”

Finally, trademark owners must enforce their trademark rights against others using their trademarks generically. Google has done this by challenging internet domain names incorporating the word “google” in them as a form of cybersquatting and objecting to the Swedish Language Council’s addition of the word “ogooglebar” (meaning “ungoogleable”) to its lexicon.

All of the above actions can help a trademark owner keep their trademark flying high as a Frisbee branded flying saucer! 

Having a great trademark team can help too. Reach out to Lloyd & Mousilli if you need help.

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Answer:

All the marks on Lines 2 and 4 are still federally registered trademarks.
All the marks on Lines 1 and 3 were federally registered trademarks that have since lost their trademark protection due to genericide.

Fun fact: There’s so much confusion around what “generically” used trademarks are still registered that several lists online are incorrect! I had to double check each one of these on the trademark register to ensure these answers were all correct. Wherever there is a live trademark registration still connected to the term, I’ve linked to the record.

Did you know that SUPER HERO has been a registered trademark for “masquerade costumes” since 1967?

Under US trademark law, you’re not supposed to be able to get trademark protections for generic terms that name a type of product. Merriam-Webster Dictionary defines “Superhero” as “a fictional hero having extraordinary or superhuman powers.” Every costume store out there has a “superhero” section, and consumers clearly perceive the term as referring to a type of character. So all in all, the existence of this registration doesn’t really make any sense.

It appears that even the USPTO itself doesn’t recognize “Superhero” as a registered trademark. Although the trademark office bars the inclusion of a third-party registered mark in a trademark registration’s identification of goods/services, a quick search of the trademark register indicates that there are several trademarks registered with costumes or costume-related goods with “superhero” in the identification.

For example, Reg. No. 5436451 OPPOSITE OF FEAR is registered with “Costumes for use in children's dress-up play or role-playing games, namely, superhero themed and animal themed costumes” in Class 25 and “Toy and novelty masks and costuming accessories in the nature of . . . novelty superhero equipment, namely, masks, headbands, and eyepatches” in Class 28.

What’s even weirder about the SUPER HERO registration is that it is jointly owned by Marvel Characters AND DC Comics – noted long-time competitors in the superhero comic, costume, and film business. A trademark fundamentally identifies a single source of goods/services; competitors simply cannot jointly own a trademark, as that would defeat the entire point of even having it. If two such different and competitive companies such as Marvel and DC “jointly” own a trademark for SUPER HERO, that indicates that consumers cannot possibly view SUPER HERO as being a single source indicator for either of them. This only further supports the conclusion that consumers view SUPER HERO as a generic term referring to characters, stories, and related products in the superhero genre.

Astoundingly, Marvel and DC also jointly own:

‍SUPER HEROES for Class 28: “Toy figures” (registered since 1980)

‍SUPER HEROES for Class 16: “PUBLICATIONS, PARTICULARLY COMIC BOOKS AND MAGAZINES AND STORIES IN ILLUSTRATED FORM” (registered since 1981)

‍SUPER HEROES for Class 25: “t-shirts” (registered since 2009)

Incredibly, all of these marks were registered on the principal register without even a 2(f) acquired distinctiveness statement, which is usually required for descriptive marks to register on the Principal US Register. Such a statement declares that the descriptive mark has gained secondary meaning and has become well-known enough that consumers recognize it as a source indicator. The absence of any 2(f) statement on any of the SUPER HERO/ES marks indicates that the USPTO never treated these marks as descriptive. Given the undoubted genericness of the word, this is as unbelievable as most 60s supervillains’ schemes!

How did this happen? Unfortunately, trademark prosecution records are limited for marks which were registered prior to 1984, so we don’t know for sure. Although we can easily see the registration certificates issued in the 1967, 1980, and 1981 SUPER HERO/ES trademarks, we can’t tell just by looking at the US Trademark Register records whether the USPTO ever issued any refusals against the marks before ultimately registering them. The only refusal ever issued in the registration for “t-shirts” related to the merely ornamental presentation of the term on a specimen submission, which the applicant easily overcame.

Regardless of how these trademarks ever registered, the validity of these trademark registrations is now being challenged at the Trademark Trial and Appeal Board by Superbabies Limited, which filed a Petition for Cancellation against the marks based on their genericness and abandonment back on May 14, 2024.

The petition used the registrants’ own creative works against them, stating “DC and Marvel’s strategy is ripped straight from their own supervillains’ playbook,” and including excerpts of storylines relating to use of legal mechanisms to shut down heroic work from Fantastic Four, Ultimate Spider-Man, Batman, and Justice League of America comics. It also includes such mic-drop worthy lines as “It is time for DC and Marvel’s villainous reign to end. SUPER HEROES belong to the people—they do not belong to Marvel or DC, just as they do not belong to Dr. Doom, Kingpin, or the Joker.”

This cancellation is itself an effort to fight DC Comics’ own attempts to shut down Superbabies’s work. In one TTAB opposition action filed April 04, 2024, DC strongly implied that due to its family of “Super” marks, it had the exclusive right to use “the prefix SUPER followed by a generic term for a human being or group of human beings of various ages.”

Although Marvel and DC Comics filed a notice of appearance and a motion to extend their time to answer to July 24, they have yet to file an answer. Thus, on August 09, Superbabies filed a motion for default judgment canceling the marks.

After 60 years of protecting these marks, why are DC and Marvel giving up now? It’s possible that news articles and commentary covering the cancellation effort persuaded them it was better to let the case go than risk further negative publicity. The rise of social media has led to media companies generally being far more sensitive to public outcry than in the past, which in many cases has resulted in a less litigious and more tolerant approach to their intellectual property rights. This can be most clearly seen in the example of Disney, which used to be known as a fierce protector of its IP; however, in recent years, Disney has been far more lenient towards fan-made works and tributes.

Regardless, it appears that Marvel and DC’s “villainous reign” of trademark control of SUPER HERO will soon to come to an end.

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¹ https://ttabvue.uspto.gov/ttabvue/v?pno=92085201&pty=CAN&eno=1

² https://ttabvue.uspto.gov/ttabvue/v?pno=92085201&pty=CAN&eno=7

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